Charming Shoppes, Inc. v. Juga Fish
Claim Number: FA1206001447979
Complainant is Charming Shoppes, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Juga Fish (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fsashionbug.com>, <fasahionbug.com>, <lkanebryant.com>, <lanevbryant.com>, <lanerbryant.com>, <lanebvryant.com>, <lanebtryant.com>, <lanebryuant.com>, <lanebrysant.com>, <lanebryasnt.com>, <lanebryanrt.com>, <lanebryanbt.com>, <lanebryamnt.com>, and <lanebrtyant.com>, registered with Godaddy.Com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2012; the National Arbitration Forum received payment on June 8, 2012.
On June 11, 2012, Godaddy.Com confirmed by e-mail to the National Arbitration Forum that the <fsashionbug.com>, <fasahionbug.com>, <lkanebryant.com>, <lanevbryant.com>, <lanerbryant.com>, <lanebvryant.com>, <lanebtryant.com>, <lanebryuant.com>, <lanebrysant.com>, <lanebryasnt.com>, <lanebryanrt.com>, <lanebryanbt.com>, <lanebryamnt.com>, and <lanebrtyant.com> domain names are registered with Godaddy.Com and that Respondent is the current registrant of the names. Godaddy.Com has verified that Respondent is bound by the Godaddy.Com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@fsashionbug.com, postmaster@fasahionbug.com, postmaster@lkanebryant.com, postmaster@lanevbryant.com, postmaster@lanerbryant.com, postmaster@lanebvryant.com, postmaster@lanebtryant.com, postmaster@lanebryuant.com, postmaster@lanebrysant.com, postmaster@lanebryasnt.com, postmaster@lanebryanrt.com, postmaster@lanebryanbt.com, postmaster@lanebryamnt.com, and postmaster@lanebrtyant.com. Also on June 12, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
i. FASHION BUG (e.g., Reg. No. 942,143 registered August 29, 1972); and
ii. LANE BRYANT (e.g., Reg. No. 1,293,460 registered September 4, 1984).
i. FASHION BUG (Reg. No. TMA485,064 registered October 31, 1997); and
ii. LANE BRYANT (e.g., Reg. No. TMA714,351 registered May 14, 2008).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights to its FASHION BUG and LANE BRYANT marks.
2. Respondent’s disputed domain names are confusingly similar to Complainant’s marks.
3. Respondent has no rights to or legitimate interests in the disputed domain names.
4. Respondent registered and used the domain names in bad faith
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has presented evidence that it owns the following trademark registrations with the USPTO and CIPO:
USPTO:
FASHION BUG (e.g., Reg. No. 942,143 registered August 29, 1972); and
LANE BRYANT (e.g., Reg. No. 1,293,460 registered September 4, 1984).
CIPO:
FASHION BUG (Reg. No. TMA485,064 registered October 31, 1997); and
LANE BRYANT (e.g., Reg. No. TMA714,351 registered May 14, 2008).
The Panel finds that such registrations definitively establish Complainant’s rights in the FASHION BUG and LANE BRYANT marks under Policy ¶ 4(a)(i). See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO).
Further, Complainant argues that Respondent’s <fsashionbug.com> and <fasahionbug.com> domain names are confusingly similar to the FASHION BUG mark. Complainant asserts that the disputed domain names are typosquatted versions of the FASHION BUG mark because the disputed domain names are merely misspellings of Complainant’s mark. The Panel notes that both disputed domain names remove the space between the terms of the mark and add the generic top-level domain (“gTLD”) “.com.” Further the Panel notes that the <fsashionbug.com> domain name adds the letter “s” to the mark and that the <fasahionbug.com> domain name adds the letter “a” to the mark. The Panel finds that such changes to Complainant’s mark do not remove the disputed domain names from the realm of confusing similarity. Therefore, the Panel finds the disputed domain names to be confusingly similar to the FASHION BUG mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
Further, Complainant contends that Respondent’s <lkanebryant.com>, <lanevbryant.com>, <lanerbryant.com>, <lanebvryant.com>, <lanebtryant.com>, <lanebryuant.com>, <lanebrysant.com>, <lanebryasnt.com>, <lanebryanrt.com>, <lanebryanbt.com>, <lanebryamnt.com>, and <lanebrtyant.com> domain names are confusingly similar to the LANE BRYANT mark. The Panel notes that the disputed domain names remove the space from between the terms of the mark and add the gTLD “.com.” Further, the Panel notes that each domain name contains one added letter to the mark, such as the letter “k” or “v.” The Panel finds that the disputed domain names are confusingly similar to the LANE BRYANT mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has not been commonly known by the disputed domain names. Complainant points to the WHOIS record, which identifies “Juga Fish” as the registrant for all of the disputed domain names, as support for its assertions under Policy ¶ 4(c)(ii). The Panel finds that, without other evidence from Respondent indicating that it is commonly known by the disputed domain names, that Respondent has not been commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that Respondent’s <lkanebryant.com>, <lanevbryant.com>, <lanerbryant.com>, <lanebvryant.com>, <lanebtryant.com>, <lanebryuant.com>, <lanebrysant.com>, <lanebryasnt.com>, <lanebryanrt.com>, <lanebryanbt.com>, <lanebryamnt.com>, and <lanebrtyant.com> domain names eventually resolve to a website featuring links to Complainant’s own website in violation of the affiliate agreement between Complainant and Respondent. The Panel determines that Complainant’s evidence appears to show that, when an Internet user enters one of the disputed domain names above, the Internet user is eventually brought to a webpage located at <ehoteldirectory.com> that displays two banner advertisements to Complainant’s official website. Complainant argues that such use is a clear violation of its affiliate program. The Panel finds that Respondent’s use of the disputed domain names does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Further, Complainant argues that Respondent’s <fsashionbug.com> and <fasahionbug.com> domain names do not resolve to active websites. The Panel finds that Respondent’s failure to make an active use of the disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant argues that Respondent has been the respondent in several prior UDRP proceedings where Respondent was ordered to transfer the domain names at issue to the respective complainants. See BBY Solutions, Inv. v. Juga Fish, FA 1326155 (Nat. Arb. Forum July 12, 2010); see also Direct Line Ins. Plc v. Juga Fish, FA 1311750 (Nat. Arb. Forum Apr. 22, 2010); see also Staples, Inc. v. Juga Fish, FA 1380088 (Nat. Arb. Forum Apr. 19, 2011). Complainant argues that these prior adverse proceedings are evidence of Respondent’s bad faith registration and use of the current disputed domain names. Complainant also alleges that Respondent has registered several other trademark infringing domain names. See Exhibit O. The Panel finds that Respondent’s prior adverse UDRP proceedings, the current registration of several trademark infringing domain names involved in the present proceedings, and Respondent’s other domain name registrations are evidence of Respondent’s bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
Complainant contends that Respondent’s <lkanebryant.com>, <lanevbryant.com>, <lanerbryant.com>, <lanebvryant.com>, <lanebtryant.com>, <lanebryuant.com>, <lanebrysant.com>, <lanebryasnt.com>, <lanebryanrt.com>, <lanebryanbt.com>, <lanebryamnt.com>, and <lanebrtyant.com> domain names eventually resolve to a website featuring links to Complainant’s own website in violation of the affiliate agreement between Complainant and Respondent. The Panel finds that this use is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program).
Further, Complainant argues that Respondent’s <fsashionbug.com> and <fasahionbug.com> domain names do not resolve to active websites. The Panel finds that Respondent’s failure to make an active use of the disputed domain names is evidence of Respondent’s bad faith registration and use of the disputed domain names under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Lastly, Complainant argues that Respondent’s registration and use of the <fsashionbug.com>, <fasahionbug.com>, <lkanebryant.com>, <lanevbryant.com>, <lanerbryant.com>, <lanebvryant.com>, <lanebtryant.com>, <lanebryuant.com>, <lanebrysant.com>, <lanebryasnt.com>, <lanebryanrt.com>, <lanebryanbt.com>, <lanebryamnt.com>, and <lanebrtyant.com> domain names constitutes typosquatting. Complainant asserts that typosquatting, in and of itself, is further evidence of Respondent’s bad faith registration and use of the disputed domain names. The Panel agrees and finds as such under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fsashionbug.com>, <fasahionbug.com>, <lkanebryant.com>, <lanevbryant.com>, <lanerbryant.com>, <lanebvryant.com>, <lanebtryant.com>, <lanebryuant.com>, <lanebrysant.com>, <lanebryasnt.com>, <lanebryanrt.com>, <lanebryanbt.com>, <lanebryamnt.com>, and <lanebrtyant.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 20, 2012
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